Case Digest (G.R. No. 220558)
Facts:
In EMZEE FOODS, INC. v. ELARFOODS, INC. (G.R. No. 220558, February 17, 2021), the petitioner, Emzee Foods, Inc., sought to reverse the Court of Appeals’ March 27, 2015 Decision and September 11, 2015 Resolution affirming the Intellectual Property Office (IPO) Director General’s December 20, 2013 decision finding petitioner liable for unfair competition and trademark infringement. The respondent, Elarfoods, Inc., traced its origins to 1970 when spouses Jose and Leonor Lontoc marketed lechon under the name “ELAR’S Lechon,” and formally incorporated on May 19, 1989 under Republic Act No. 166. Beginning in 2001, respondent applied for registration of the marks “ELAR’S LECHON,” “ON A BAMBOO TRAY,” and “ROASTED PIG DEVICE,” and upon issuance in 2005–2006, it sent a Cease and Desist Letter to petitioner, which continued using confusingly similar marks such as “ELARZ LECHON” and identical designs. Respondent filed consolidated complaints for unfair competition and infringement before thCase Digest (G.R. No. 220558)
Facts:
- Origins and Incorporation
- In 1970, spouses Jose and Leonor Lontoc began selling Filipino food and roasted pigs under the name “ELARS Lechon.”
- On May 19, 1989, they incorporated their business as Elarfoods, Inc., actively managed by the spouses Lontoc, and marketed products as “ELAR’S LECHON ON A BAMBOO TRAY.”
- Petitioner’s Infringing Use and IPO Proceedings
- Emzee Foods, Inc. (petitioner) sold roasted pigs using “ELARZ LECHON,” “ELAR LECHON,” “PIG DEVICE,” and “ON A BAMBOO TRAY” without authorization, causing source confusion.
- Elarfoods, Inc. (respondent) filed trademark applications on September–October 2001 for “ELARS LECHON,” “ON A BAMBOO TRAY,” and “ROASTED PIG DEVICE.”
- Respondent’s cease-and-desist letter to petitioner on October 2, 2001, was ignored.
- Respondent lodged three complaints for unfair competition and infringement; IPO Bureau of Legal Affairs (BLA) consolidated the cases.
- August 8, 2005: BLA Director Beltran-Abelardo dismissed the complaints, holding the spouses Lontoc (Estate) as owners by prior use and denying jurisdiction to decide assignment.
- February 10, 2005, April 28, 2006, October 2, 2006: IPO issued Certificates of Registration to respondent for the three marks, valid for ten years.
- December 20, 2013: IPO Director General Blancaflor reversed BLA, ruled that trademarks were effectively transferred to respondent upon incorporation, found petitioner liable for unfair competition (pre-registration) and infringement (post-registration), and awarded moral damages (₱500,000), exemplary damages (₱400,000), attorney’s fees (₱500,000), and costs.
- March 27, 2015: Court of Appeals (CA) affirmed IPO ruling, applied dominancy test, retained exemplary damages and attorney’s fees, but deleted moral damages.
- Petitioner’s motion for reconsideration was denied on September 11, 2015; petitioner filed a Rule 45 petition for review on certiorari to the Supreme Court.
Issues:
- Ownership of the Subject Trademarks
- Whether the Estate of the spouses Lontoc or Elarfoods, Inc. holds ownership of “ELARS LECHON,” “ON A BAMBOO TRAY,” and “ROASTED PIG DEVICE.”
- Whether respondent is the real party in interest before the IPO.
- Liability, Damages, and Injunction
- Whether petitioner is liable for unfair competition and trademark infringement.
- Propriety and quantum of moral damages, exemplary damages, attorney’s fees, and costs.
- Whether an injunction should issue preventing petitioner’s continued use of the marks.
Ruling:
- (Subscriber-Only)
Ratio:
- (Subscriber-Only)
Doctrine:
- (Subscriber-Only)